Universal Furniture International, Inc. v. Paul Frankel

To be found personally liable for a violation of the Lanham Act plaintiff must show that defendant, themselves, falsely designated the origin of plaintiff’s property.

Universal Furniture International, Inc. (“UFI”) made and sold furniture. Paul Frankel (“Frankel”) sold furniture through the Collezione company. In 2004 the court found that Collezione had violated the Lanham act by selling UFI’s furniture and passing it off as their own and by using UFI’s photographs to help sell the furniture. UFI brought this action against Frankel, for personal liability, for copyright infringement in the Collezione case. In order to establish that Frankel was responsible for violating the Lanham Act UFI had to prove that 1) the furniture originated from UFI, 2)that Frankel falsely designated the origin of the furniture, 3)that the false designation was likely to cause consumer confusion, 4)and that UFI was harmed. The court found that elements 1,3,and 4 were satisfied by the previous litigation but that UFI must prove element 2 specifically to Frankel, and that he played a “legally cognizable role” in falsely passing off UFI’s furniture as Collezione’s. Frankel gave conflicting testimony as to whether or not he was aware of the infringing activities and as to whether or not he was involved in the infringing activities. However, UFI was able to show that Frankel knew or had reason to know of the copyright infringement and continued to participate in the infringing activity even after he knew. The court found that even in the light most favorable to Frankel, he was personally liable for the copyright infringement of UFI’s furniture. Summary Judgment GRANTED for UFI.